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Stanley N. Cohen Papers 1948-2016
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Cohen/Boyer patent information, 1976

Signed five-page memo dated November 15, 1976 from Niels J. Reimers to SNC, Daniel Federman, I. Robert Lehman, Clayton Rich, Robert Rosenzweig, "Reimers file" handwritten by SNC in top right corner of p. 1, Subject: Genetic Engineering License; text begins, "This memo is intended as background for our meeting" November 24 at 1:30 p.m., "We anticipate receiving soon from NIH their release to license. Licensing will then be up to Stanford", sections of memo are: I. Property, II. Licensing Objectives, III. Licensing Negatives, IV. Industry Interaction, V. The Licensing Plan, and VI. Summary

Signed memo dated November 9, 1976 from Niels Reimers to Daniel Federman, cc SNC, "Reimers file" handwritten by SNC at top right; text begins, "Enclosed are copies of the memos that we spoke about concerning Stan's participating in licensing decisions on Recombinant DNA. Also enclosed is a copy of the CETUS August 21, 1976 "Letter to the Shareholders.", SNC has reaffirmed "his association with CETUS is as a scientific consultant on a fee-for-service basis only . . . . Stan would like to participate in the meeting which is scheduled" for November 24 at 1:30 p.m.; no attachments

Memo dated August 24, 1976 from John H. Rautischek to Betsy Clark, cc Niels Riemers [sic], Norm Latker, Chuck Herz, re "Invention disclosure NSF-75-17-GB-30581 Stanford University", in upper right "REIMERS file" handwritten by SNC; thanks for June 24th Nature article about Cohen-Boyer invention, "It is of interest that the NSF support from Herman Lewis' program was not mentioned in the article but perhaps we don't need the publicity."

News release dated July 19, 1976 from Stanford University Medical Center News Bureau, Contacts: Spyros Andreopoulos at Stanford, Michela Reichman at UCSF, "File - PATENT" handwritten by SNC in upper right, "SCIENCE WRITERS: The following story is distributed jointly with the University of California, San Francisco"; first sentence: "Stanford University and the University of California have filed an application to patent key elements of a new genetic engineering technique developed by scientists at both institutions."

Signed memo dated July 19, 1976 from SNC to Robert M. Rosenzweig, cc R. Augsburger, W. Massy, N. Riemers, C. Rich, SUBJECT: DNA Cloning Patent; text begins, "I wish I could agree with you that it is possible for me to completely detach myself from the University's decisions about the DNA cloning patent. . . . At the Miles Symposium where the patent issue was first raised publicly, I was able to effectively disarm critics in what could have been a very difficult situation. If instead of answering questions in an informed, honest and straightforward manner, I had responded by saying that I have "no knowledge or voice in the University's decision" as you have suggested, the public perception would surely have been that either I or the University, or both, have something to hide. . . . From my discussions with Neils Riemers [sic], it seems clear that the University administration will need to obtain advice on such matters [as patent policy] from faculty scientists, since scientific as well as purely business considerations are involved. . . . As I noted in my earlier memo to Neils Riemers [sic], I believe that any scientific advice I might provide to the Cetus Corporation can be disassociated entirely from input I provide to the University in connection with its licensing of this patent. . . ."

Signed letter dated July 9, 1976 from Robert M. Rosenzweig to Donald S. Fredrickson, bcc Richard W. Lyman, Bill Massy, Jim Siena, Clayton Rich, Paul Berg, David Hogness, Josh Lederberg, SNC, "Reimers file" handwritten by SNC at top right; "Thank you for your letter of July 6. I was pleased to know, as indeed Dr. Perpich had told me, that you have begun a careful review of patent policies with respect to recombinant DNA. . . . we have taken some pains to consult fairly widely about the wisdom and propriety of our proposed course of action and . . . have held off making irrevocable decisions until consultative processes had a chance to work. . . .[re NIH deliberations] Let me repeat my earlier offer to participate in those deliberations, or to arrange for participation by others at Stanford. Let me also urge that you act with both deliberation and dispatch. . . ."; attached is signed letter dated July 6, 1976 from Donald S. Fredrickson to Robert M. Rosenzweig, date stamped "RECEIVED JUL 8 1976 Vice President for Public Affairs"; text: responding to your letter of June 18, " . . . Dr. Joseph Perpich has told me of his conversation with you concerning the patent issues you raised in your letter and the accompanying memorandum. . . . I have undertaken a careful review of our patent policies with respect to recombinant DNA research. . . . Norman Latker, the patent counsel" for DHEW "may already have told you--in proceeding to obtain patents, Stanford has acted consistently within the terms of the institutional agreement Stanford has with the Department. I shall keep you informed of my policy review."

Signed memo dated July 7, 1976 from Robert M. Rosenzweig to SNC, cc R. Augsburger, W. Massy, N. Reimers, C. Rich, "Reimers file" handwritten by SNC in upper right of page; text begins "I have thought a good deal about your memorandum of June 14 to Niels Reimers. The questions you raise are not for me to decide--Clayton Rich, Bill Massy an Bob Augsburger have responsibilities more direct than mine. I cannot help but wonder, though, whether what you propose -- full knowledge of all aspects of licensing arrangement -- is the best way to achieve your aim -- avoiding damage to your professional reputation by virtue of association with unpopular University decisions. . . . If you can say to critics, "I had no knowledge of or voice in that decision" then I think you have effectively disarmed their criticism, at least as it applies to you. . . . I think you have a legitimate and important role in decision-making with respect to exploitation of the patent as a scientist and a member of the faculty. . . ."

Signed letter dated July 2, 1976 from Bertram I. Rowland to Niels J. Reimers, date stamped "STANFORD UNIVERSITY JUL 6 1976 TECHNOLOGY LICENSING", handwritten at top right 1. JKP 2. fS74-43 xcc Cohen Boyer" and in SNC's handwriting, "File - Reimers", "Applicant: STANLEY N. COHEN, et al., Serial No.: 687,430, Filing Date: 05/17/76, For: PROCESS AND COMPOSITION FOR BIOLOGICALLY FUNCTIONAL MOLECULAR DNA CHIMERAS, Our File No.: 5490-2-1; text begins, "The application above has been filed in the United States Patent and Trademark Office. . . ."

Signed memo dated June 30, 1976 from Robert M. Rosenzweig to R. Augsburger, P. Berg, S. Cohen, R.W. Lyman, W.F. Massy, N. Reimers, C. Rich, J. Siena, "File Reimer" handwritten by SNC at top right, "SUBJECT: Telephone Conversation with Joseph Perpich, Associate Director for Program Planning, NIH"; text begins: "On June 29 I called Donald Fredrickson, following my letter to him of June 18. Fredrickson was not available, but Dr. Perpich returned my call. . . . He said that NIH had received "several" letters inquiring about reports of patent activity in the Recombinant DNA area by Stanford and the University of Alabama, and so there was a need for them to consider the matter and decide what, if any, position NIH should take. . . . I made three points throughout", "1. We did not want the issue to be handled in such a way as to enable people to believe that we were acting in a secretive, sly, or underhanded way. . . . 2. We had a time problem with respect to one potential licensee . . . . 3. We are eager to have NIH's views on the soundest course to pursue, understanding, of course, that we might disagree with them when we know what they are. . . . "

Signed memo dated June 18, 1976 from Niels Reimers to Robert Rosenzweig, cc Stan Cohen, "Reimers file" handwritten by SNC at top right; text refers to attached June 14 memo from SNC re "possible appearance of a conflict of interest because of his role as a consultant with Cetus vs. his role as a confidant and advisor i the process of licensing to commercial entities . . . the association of Dr. Cohen and Dr. Lederberg with Cetus, the investment of other Stanford-related people in Cetus, as well as the investment of the University itself in Cetus, have been a matter of specific concern to representatives of a company with which we have been in contact . . . There is, of course, no issue if non-exclusive licensing only is followed. . . . I should also mention that we are not involving Herb Boyer in the business side of Recombinant DNA for even more obvious reasons. . . . would you please be kind enough to give Stan and me the benefit of your counsel?"; no attachments

Signed two-page letter dated June 18, 1976 from Robert M. Rosenzweig to Donald S. Fredrickson, cc R.W. Lyman, W.F. Massy, C. Rich, P. Berg, S. Cohen, "Reimers file" handwritten by SNC at top right of p. 1; text begins, "From Paul Berg and others I know that you are aware of the discussions taking place at Stanford now over the wisdom of proceeding (on behalf of Stanford and the University of California) with an application for patent protection for discoveries in the area of Recombinant DNA. As you know, we began to move in this direction with the knowledge and consent of NIH and NSF . . . The purpose of this letter is to solicit your views. . . .", refers to enclosed memo "in which I have attempted to summarize some of the major questions and address them in a way that makes sense to me, at least. . . . One point on which there is substantial unanimity among the officers of the University is that, if this line of work is to be developed in a way that provides income to the holder of a patent, there is no institution or group that has a stronger claim to that income than Stanford and the University of California . . ."; attached signed four-page memo dated June 4, 1976 from Robert M. Rosenzweig to "Those Interested in Recombinant DNA", "SUBJECT: Thoughts on the Patent Question", memo sections: I The Effect of Patents on the Conduct of Science, II Commercial Development and Basic Research, III The University's Financial Condition, IV Conflict of Interest and Public Policy, then: " . . . It will be clear to readers by now that my strong preference is to press for patent protection and a responsible licensing program. . . . I solicit the views of all who read this."

Photocopy of C&EN, June 7, 1976, p. 7, "File - Reimers" handwritten by SNC at top right, page 7 contains article, "Industry wary about genetic guidelines," no byline, text: NIH recombinant DNA guidelines "have been tailored to the conditions of research in universities and government laboratories and in some aspects may not be reasonable as guidelines for industry" according to some industry reps, "A modified version of the guidelines more useful to industry seems a good idea, both Dr. Fredrickson and industry representatives agree."

June 4, 1976 memo described above in Row 348, with "Please circulate around lab." and "Reimers" handwritten, not by SNC, at top of p. 1; eight sets of initials at top right of p. 1, including "SNC"

Five-page "SUPPLEMENTAL RESPONSE" to A. Tanenholtz, "Patent file" handwritten by SNC at top right of p. 1, signed on p. 5 by Bertram I. Rowland on October 4, 1977, handwritten "cc: Stanley Cohen, Herbert W. Boyer, Niels J. Reimers"; text begins, "Supplemental to the June 24 response to the Office Action of April 5, 1977, applicants, by their attorney, wish to submit the following remarks."

Four-page "RESPONSE UNDER RULE 116" to A. Tanenholtz, "Patent file" handwritten by SNC at top right of p. 1, signed on p. 4 by Bertram I. Rowland on October 25, 1977, typewritten cc: Stanley Cohen, Niels J. Reimers"; text begins, "In response to the FINAL REJECTION of October 3, 1977, the Examiner is earnestly requested to withdraw the rejections in view of the following remarks. Unfortunately, a supplemental reponse [sic] did not arrive at the Examiner's desk prior to his preparation of the FINAL REJECTION."

Four-page "SUPPLEMENTAL RESPONSE" to A. Tanenholtz with unsigned signature line on p. 4 for Bertram I. Rowland; text begins, "Supplemental to the June 24 response to the Office Action of April 5, 1977, applicants, by their attorney, wish to submit the following remarks. The courteous interview granted applicants' attorney is gratefully acknowledged."

Seven-page "AMENDMENT" to A. Tanenholtz, "Patent file" handwritten by SNC at top right of p. 1, signed on p. 7 by Bertram I. Rowland on June 24, 1977; text amends Claims 40 and 44, cancels Claim 45

Signed letter dated May 12, 1976 from Bertram I. Rowland to SNC, right margin has note handwritten by SNC, "db - please send enclosed to Bert Rowland at above address. Keep copy for our files" and written next to it in a different hand, "5-13-76", SNC notes at bottom of page, "P. 14 row" and "16 - J. Bact."; three attachments: 1) "ASSIGNMENT" signed but not dated by SNC, listing both SNC and Boyer as Assignors, Title of Invention: Process and Composition for Biologically Functional Molecular Chimeras, and the Board of Trustees of the Leland Stanford Junior University as Assignee, form states that for $1.00 Assignors have "sold, assigned and transferred . . . . all right, title and interest in and to the said invention . . . " to Assignee [signed and unsigned versions of this ASSIGNMENT form also catalogued in Rows 312, 366, and 429]; 2) "DECLARATION AND POWER OF ATTORNEY" signed by SNC on May 12, 1976 appointing 13 listed "attorney(s) and/or agent(s) to prosecute this application and transact all business in the Patent and Trademark Office connected therewith" (including Bertram I. Rowland) [newer signed version of slightly different form (21 lawyers listed) catalogued in Row 312 and unsigned 21-lawyer version of form catalogued in Row 430]; 3) undated 40-page "PROCESS AND COMPOSITION FOR BIOLOGICALLY FUNCTIONAL MOLECULAR CHIMERAS"

Unsigned two-page letter dated April 28, 1976 from SNC to Bertram I. Roland [sic], at end of letter "c to P. Farley (CETUS) 5-5-76" handwritten, not by SNC or Karen Carpenter, 'COHEN-BOYER PATENT" handwritten at top of p. 1 by Karen Carpenter; text begins: "Enclosed is the information you requested. My lack of time right now limits completeness. I. General categories of composition. . . ." with brief scientific/technical answers numbered 1-2, 4-11

"Dictated but not read" letter dated April 22, 1976 from Bertram I. Rowland to SNC, cc Herbert Boyer, Niels Reimers, "Reimers - file" handwritten by SNC at top right; text contains five paragraphs of requests for scientific/technical information re patent application

Signed letter dated March 25, 1976 from John A. King, American Cyanamid Company to Niels J. Reimers, date stamped "STANFORD UNIVERSITY MAR 29 1976 TECHNOLOGY LICENSING", in top right, "xcc Cohen Poitras f S74-43" handwritten and handwritten by SNC, "file Reimers"; text: ". . . . Enclosed is a copy of King's notes on "Gene Transfer Process" from "my notes on the non-confidential conversation I had with NRDC people last Fall about the position of ICI on the gene transfer process work done at Edinburgh University. . . . "; attached Cyanamid "Memorandum II National Research Development Corp. JAK Visit of 9/3/75 Page -14- "U. Gene Transfer Process", "They told me that there had been filed, about a year ago, patent applications on the work of the two Murrays, at Edinburgh University, which had been sponsored by the Medical Research Council and which was tied up by and tied in with ICI on a gene transfer process using a phage as the carrier. . . ." text continues for total of 18 lines

Unsigned two-page letter dated March 1, 1976 from SNC to Bert Roland [sic], cc Niels Reimers; "In reference to your plans to resubmit a patent application to provide better coverage for Stanford, I have the following comments: 1) You indicated a need to define organisms that are "ordinarily unable to exchange genetic information" I believe this can be covered by the situation where DNA from one organism is not known to be able to propagate itself in the second organism. . . . 2) In organisms that can exchange genetic information biologically without the use of this methodology, I cannot think of any way to provide tight coverage against surreptitious attempts to get around Stanford's patent. . . . I am sorry that I can't be of more help regarding item 2. However, I think you should be able to get very tight coverage in the area of item 1, which I believe is where most of the financial rewards to Stanford will eventually be realized. . . ."; letter mentions "I have enclosed a copy of my Federation Proceedings review on Translocations" but there is no attachment to letter in file

Unsigned letter dated February 3, 1976 from SNC to Niels Reimers; re "Agreement concerning rights in DNA cloning procedure . . . It has come to my attention that a couple of other things need clarification in the above agreement: 1. The draft agreement dated June 19, 1975 has no termination date. . . . 2. I would like the agreement to contain a clause assigning all of my rights and privileges to my heirs or an assignee. . ."

Unsigned letter dated January 28, 1976 from SNC to Niels Reimers; re "Agreement concerning processing composition for biologically functional molecular DNA chimeras, described in U.S. Patent Application 520,691", "As a follow-up to my memo of January 6, 1976 on this subject, I would like to propose the following modifications in the above agreement:" then three changes described in 17 lines of text, then, "My request for these changes is motivated by personal and tax considerations. . . ."

Signed letter dated January 26, 1976 from Niels J. Reimers to Bertram I. Rowland, cc SNC and Boyer, "Reimers file" handwritten by SNC at top right of page; "Subject: Patent Application for "Process & Composition for Biologically Functional Molecular DNA Chimeras," your file 5490-2, Stanford file S74-43"; text: "Your recommendation regarding the prosecution o f the above patent application, as contained in your letter of January 21, 1976, and based upon discussions with Dr. Cohen, is to allow the application to issue and then refile. Please consider this letter as your authorization to refile--of course prior to the issuance of the above application."

Signed three-page letter dated January 21, 1976 from Bertram I. Rowland to Niels J. Reimers, cc SNC, "Reimers file" handwritten by SNC at top right of page; text begins, "After being somewhat elated with my progress in the subject application, after discussions with Stanley, my gratification diminished significantly. What I apparently thought was great progress in obtaining substantial coverage for the subject invention was being undermined by new scientific advances. Accompanying this letter are the new claims which the Examiner indicated he would be willing to allow." [no attachments to letter in file], next 33 lines discuss claims, including comment re Claim 23, "Stanley informs me of two problems with this claim. . . .", final paragraph begins: "It is possible to allow the subject application to issue, while refiling a modified version and expanding the discussion concerned with the differences between DNA segments which could not be joined in vivo and those which theoretically could be joined in vivo. . . ."

Unsigned letter dated January 6, 1976 from SNC to Niels Reimers, "File - Reimers" handwritten by SNC at top right of page; re "Licensing procedure for DNA cloning procedure"; text begins, "As we discussed today by telephone, I would like to propose some modifications in the licensing agreement that I signed and returned to you recently. These changes concern the sections on distribution of funds from the departmental and inventor's share of royalties.", comments that since "I have never received an executed copy of this agreement signed by you . . . I understand that modifications can still be readily carried out. . . ."; at bottom of page is typewritten, "Handwritten note attached: Niels, This seemed like one way to handle things without sticking you with the responsibility for re-opening the matter. Please let me know if you feel it presents any problem. Stan"

Newspaper clipping glued to 8-1/2" X 11" paper, with "Patent File" handwritten (not by SNC) at top right of page; "By Stanford, UC Patent Filed for Genetic 'Process'", no byline, pp. 1 and ?, Medical Center MEMO, Vol. 18, No. 6, 1976.; text: ". . . If awarded, the patent would cover commercial use of the process, said Niels Reimers, manager of Stanford's technology licensing program. It would not affect its use for academic or industrial research. . . . However, William F. Massy, acting vice-president and provost, stressed that Stanford has made no decision to exploit the technique commercially. "The matter is still under discussion with federal officials and being debated internally," he said. . . ."